Pastarito S.r.l.

Trademark Trial and Appeal Board

Apr 1, 2003

No. 75812311 (T.T.A.B. Apr. 1, 2003)

Mailed: 01 APR 2003
Paper No. 15
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pastarito S.r.l.
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Serial No. 75/812,311
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Michael Schwarz of The Ruchelman Law Firm for Pastarito
S.r.l.
Andrew J. Benzmiller, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Seeherman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On September 30, 1999, Pastarito S.r.l. (applicant)
applied to register the mark PASTARITO PIZZARITO and design
shown below on the Principal Register for “restaurant
services” in International Class 42.1
1 Serial No. 75/812,311. The application is based on applicant’s
assertion of a bona fide intention to use the mark in commerce.
The application also contains a claim of ownership under 15
U.S.C. § 1126 of an Italian trademark registration.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/812,311
2
Applicant’s mark is described as consisting of “the
word PASTARITO in white on a red background and below a
representation of a column topped by a representation of a
bow-tie shaped piece of pasta in yellow with a red outline;
and of the word PIZZARITO in white on a red background and
below a representation of a column topped by a
representation of a tomato in yellow with a red outline.”
Response dated November 7, 2000, p. 2.2
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of a registration for the mark
PIZZARITO, in typed form, for “pizzas and ingredients for
making same” in International Class 30.3
After the examining attorney4 made the refusal final,
this appeal followed.
2 The drawing is not lined for color. Response dated November 7,
2000.
3 Registration No. 1,251,249 issued September 13, 1983,
affidavits under Sections 8 and 15 accepted and acknowledged.
4 The current examining attorney was not the original attorney in
this case.
Ser No. 75/812,311
3
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
The examining attorney maintains that the “dominant
part of applicant’s mark is the distinctive term PIZZARITO”
and the design elements are “relatively smaller and less
prominent, and they merely repeat the allusions to pasta in
PASTARITO and to tomato-based pizza sauce in PIZZARITO.”
Brief at 3-4. Applicant argues that the “Examining
Attorney only considered the one similarity between the
marks and failed to consider the numerous dissimilarities.”
Brief at 2. Applicant also maintains that “pizzarito” is
not the dominant element of its mark and that the overall
impressions of the marks are different.
Because of the unusual nature of applicant’s mark, we
first discuss applicant’s mark by itself. While
applicant’s mark is for the words PASTARITO and PIZZARITO
and a design element, the mark almost appears as two marks
inasmuch as the word PASTARITO and its design is separated
from the word PIZZARITO and its design.
Ser No. 75/812,311
4
As a result, the PIZZARITO portion of applicant’s mark
creates a strong separate commercial impression. Further,
the similarities between the two portions are emphasized
through the use of similar designs and word portions-–both
consist of Italian food items beginning with the letter P
(pasta and pizza), and ending in “-arito.”
Now we must determine whether applicant’s and
registrant’s marks are similar. While we must compare them
in their entireties, the test is not whether the marks can
be distinguished in a side-by-side comparison, but whether
they are sufficiently similar in their overall commercial
impression so that confusion as to the source of the goods
and services marketed under the respective marks is likely
to result. “[T]here is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of the mark, provided [that] the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Ser No. 75/812,311
5
Registrant’s mark is identical to the word PIZZARITO
in applicant’s mark, and it is similar to the only other
word in the mark, PASTARITO. The PASTARITO portion of the
mark does not distinguish applicant’s and registrant’s
marks. PASTARITO and PIZZARITO have a similar composition,
both beginning with a “P” and ending with “ARITO,” and both
beginning with a 5-letter word that references a common
Italian food item. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1845-45 (Fed. Cir. 2000)
(citations and quotation marks omitted) (“Regarding
descriptive terms this court has noted that the descriptive
component of a mark may be given little weight in reaching
a conclusion on likelihood of confusion”). In addition,
because registrant’s mark is presented in typed form, there
is no viable difference in type style between registrant’s
and applicant’s mark as applicant asserts on page 3 of its
brief. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983). We can assume that registrant’s
mark may be displayed in the same style that applicant
uses.
Regarding the design elements in applicant’s mark,
applicant has indicated that these elements create an
impression “of a place in which [a] variety of foods
(suggested by the images of pasta, pizza and tomatoes) can
Ser No. 75/812,311
6
be consumed in an atmosphere suggestive of Italy (suggested
by the Roman columns and the Italian foods imagery).”
Reply Br. at 4. Thus, the design elements are suggestive
of applicant’s proposed restaurant services, which would
include restaurants serving pasta and pizza, and,
therefore, potential customers are not likely to
distinguish the marks based on the design. Applicant’s
argument that “the design elements are entitled to greater
weight” (Reply Br. at 2) is not persuasive. Applicant’s
services are “restaurant services.” The Federal Circuit
has held in a case involving the marks DELTA and design and
DELTA that the “identity of the dominant portion of Dixie’s
mark and the registered mark is especially important in the
restaurant industry ‘because restaurants are often
recommended by word of mouth and referred to orally, [so]
it is the word portion of applicant’s mark which is more
likely to be impressed on the consumer’s memory.’” In re
Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997) (punctuation and insertion in original),
quoting, Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
Therefore, the marks would appear very similar.
As to the pronunciation of the marks, they would be
pronounced very similarly and in part identically. The
Ser No. 75/812,311
7
term PIZZARITO in applicant’s mark would, of course, be
pronounced the same as the same word in the registered
mark. The alliteration of PASTARITO PIZZARITO underscores
the similarity of the word PASTARITO with the cited mark
PIZZARITO, rather than emphasizing their differences. Just
as in Squirtco, applicant’s mark incorporates the
registered mark PIZZARITO. 216 USPQ at 939 (“Not only does
appellee's mark SQUIRT SQUAD incorporate the whole of
appellant's mark SQUIRT, but also, in SQUIRT SQUAD, SQUIRT
retains its identity. Because of the alliteration with
SQUIRT, SQUAD is an apt choice to combine with SQUIRT to
suggest a line or group of toys from the same source as
SQUIRT balloons. Thus, the marks do not create different
commercial impressions”).
We do not find that the meaning of the two marks would
be significantly different. The words in applicant’s mark
consist of the name of a food item, “pasta” and “pizza,”
with “-rito” added. The term PIZZARITO in applicant’s mark
is identical to the cited mark, and clearly has the same
meaning. The additional word in applicant’s mark has a
similar meaning to the registered mark since both refer to
common Italian food.
Applicant argues that the “overall impressions of the
marks are different” (Brief at 4). We disagree. Although
Ser No. 75/812,311
8
applicant’s mark contains the additional element PASTARITO,
for the reasons discussed above, this does not serve to
distinguish the marks. Consumers are likely to assume,
when viewing applicant’s mark in connection with restaurant
services, that the additional element PASTARITO indicates
the restaurant serves pasta as well as pizza rather than
viewing this element as indicating that PASTARITO PIZZARITO
and design restaurant services emanate from a separate
source that does PIZZARITO pizza.
We now consider whether the services of the applicant
and the goods of registrant are related. We must consider
the goods and services as they are identified in the
application and registration. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods”). “In order to find that there is a
likelihood of confusion, it is not necessary that the goods
or services on or in connection with which the marks are
used be identical or even competitive. It is enough if
there is a relationship between them such that persons
encountering them under their respective marks are likely
to assume that they originate at the same source or that
there is some association between their sources.”
Ser No. 75/812,311
9
McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814-
15 (TTAB 2001).
Here, applicant has applied to register its mark in
connection with restaurant services, while the goods in the
cited registration are identified as “pizzas and
ingredients for making same.” Applicant asserts that:
“The Goods/Services are Totally Different: The cited mark
is registered for pizza and ingredients for making pizza.
The applicant is seeking registration of its mark for
restaurant services. The marks will be encountered in
different contexts, preventing consumer confusion.”
Response dated October 12, 2001, p. 4. We are aware that
there is no per se rule that confusion is likely simply
because “similar or even identical marks are used for food
products and for restaurant services.” Jacobs v.
International Multifoods Corporation, 668 F.2d 1234, 212
USPQ 641, 642 (CCPA 1982). In this case, the record
provides support for our conclusion that pizza and
restaurant services are related. First, we note that
applicant’s identification of services is not limited so it
could include pizza restaurant services. Second, one of
the words in applicant’s mark is “Pizzarito,” which
consists of the word “pizza” with “-rito” added to it.
Ser No. 75/812,311
10
This word certainly suggests that pizza will be an item
served in applicant’s restaurant when applicant begins
using the mark in commerce. Third, applicant maintains
that its mark creates the impression “of a place in which
[there] are [a] variety of foods (suggested by the images
of pasta, pizza and tomatoes).” Reply Br. at 4. Thus,
applicant admits that its design suggests a connection
between pizza and restaurant services. The fact that the
word and design in applicant’s mark suggests the
applicant’s restaurants will serve registrant’s goods
(pizza) provides another indication that applicant’s
restaurant services are related to pizza. See In re Azteca
Restaurant Enterprises Inc., 50 USPQ2d 1209, 1211 (TTAB
1999) (“The average consumer, therefore, would be likely to
view Mexican food items and Mexican restaurants services as
emanating from or sponsored by the same source if such
goods and services are sold under the same or substantially
similar marks”). See also Opus One, 60 USPQ2d at 1815
(“The fact that applicant’s restaurant serves the type of
goods (indeed the actual goods) identified in the cited
registration is certainly probative evidence which supports
a finding under the second du Pont factor that applicant’s
services and opposer’s goods are related”).
Ser No. 75/812,311
11
In addition, the examining attorney has submitted
copies of third-party registrations to suggest that the
same source may provide both pizza and restaurant services.
See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988) (Although third-party registrations “are not
evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
[they] may have some probative value to the extent that
they may serve to suggest that such goods or services are
the type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993). The following use-based registrations show
pizza and restaurant services in the same identification of
goods and services: Nos. 2,459,339; 2,440,404; 2,318,460;
2,309,457; 2,307,621; 2,305,088; 2,214,604; 2,233,765;
2,236,421; 2,105,503; 2,094,869; 2,064,463; 2,047,184;
1,963,149; 1,927,362; and 1,875,442.
Inasmuch as the goods are pizzas and the services
include restaurants serving pizzas, the classes of
potential purchasers of these goods and services would be
at least in part identical and include the general public.
Such consumers are not likely to be highly discriminating
or sophisticated purchasers.
Ser No. 75/812,311
12
For the foregoing reasons, we find that the marks are
similar and that consumers are likely to believe that there
is an association between restaurant services and pizza,
and we conclude that there is a likelihood of confusion.
Finally, to the extent that we have any doubts, we
must resolve doubt on the issue of likelihood of confusion
against the applicant and in favor of the registrant. In
re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025,
1026 (Fed. Cir. 1988).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.